Deep Tone, Inc. v. Alex Petrov / N/A
Claim Number: FA1105001389385
Complainant is Deep Tone, Inc. (“Complainant”), represented by Brad H. Hamilton of Jones & Keller, PC, Colorado, USA. Respondent is Alex Petrov / N/A (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <deeptone.com>, registered with Nicco Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 18, 2011; the National Arbitration Forum received payment on May 18, 2011. The Complaint was submitted in both English and Russian.
On May 20, 2011, Nicco Limited confirmed by e-mail to the National Arbitration Forum that the <deeptone.com> domain name is registered with Nicco Limited and that Respondent is the current registrant of the name. Nicco Limited has verified that Respondent is bound by the Nicco Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 31, 2011, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of June 20, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@deeptone.com. Also on May 31, 2011, the Russian language Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <deeptone.com> domain name is identical to Complainant’s DEEP TONE mark.
2. Respondent does not have any rights or legitimate interests in the <deeptone.com> domain name.
3. Respondent registered and used the <deeptone.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Deep Tone, Inc., owns the DEEP TONE mark which it uses in connection with its physical fitness training, weight loss, and diet planning services and facilities. Complainant owns a federal trademark registration with the United States Patent and Trade Office (“USPTO”) (e.g., Reg. No. 2,227,659 issued March 2, 1999).
Respondent, Alex Petrov / N/A, registered the disputed domain name on March 18, 2007. The disputed domain name formerly resolved to a website which provided 22 active hyperlinks to items such as treadmills. At that time, the domain name also included an offer to contact the owner to purchase the domain name. The disputed domain name currently resolves to an inactive website.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant contends that it has established rights in the DEEP TONE mark. Prior panels have recognized federal trademark registration as sufficient to establish rights in a mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i)”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Additionally, previous panels have established that the trademark registration need not be in either the country a respondent lives in or operates in. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business. As Complainant has provided evidence of federal trademark registrations with the USTPO (e.g., Reg. No. 2,227,659 issued March 2, 1999), the Panel finds that Complainant has established rights in the DEEP TONE mark pursuant to Policy 4(a)(i).
Complainant asserts that the disputed domain name is identical to its DEEP TONE mark. Prior panels have held that the addition of a generic top-level domain (“gTLD”) and the elimination of a space from in a domain name does not distinguish it from the mark it fully incorporates. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark). The only deviations from Complainant’s mark that the disputed domain name takes are the addition of a gTLD and the elimination of a space between words: both which are necessary to create a domain name. Therefore, the Panel finds that the <deeptone.com> domain name is identical to Complainant’s DEEP TONE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. After Complainant makes a prima facie case in support of this claim, the burden then shifts to Respondent to provide evidence supporting a claim to the contrary. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names”). Due to the failure of Respondent to respond to the claim, the Panel is authorized to presume that Respondent has no rights or legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). The Panel finds that Complainant has made a prima facie case, and will review the record to determine if Respondent has rights or legitimate interests in the disputed domain name despite the allowance to presume Respondent does not.
Complainant contends that Respondent is not and has never been commonly know by the <deeptone.com> domain name. Complainant has not given Respondent the authorization to use its DEEP TONE mark, nor is it affiliated with Respondent in any way. Additionally, the WHOIS information for the disputed domain name in no way suggests that Respondent is known by the <deeptone.com> domain name. Prior panels have held this to be evidence of a lack of rights and legitimate interests. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The Panel finds that, pursuant to Policy ¶ 4(c)(ii), Respondent is not commonly known by the <deeptone.com> domain name.
Complainant next asserts that Respondent’s prior use of the disputed domain name violates Policy ¶¶ 4(c)(i) and 4(c)(iii) as neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Prior panels have found that the use of domain name to redirect Internet users to the competitors of a complainant which owns the trademark being infringed upon is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”). As such, the Panel finds that Respondent’s prior use of the disputed domain name, providing links to products and services both related and unrelated to Complainant, was neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant’s prior use of the disputed domain name included an offer to sell the domain name. Prior panels have held that this indicates that a respondent lacks rights and legitimate interests in the <deeptone.com> domain name. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name). Due to Respondent’s public offer to sell the <deeptone.com> domain name, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s current usage of the disputed domain name resolves to an inactive website. Complainant contends that this is further evidence that Respondent has no rights or legitimate interests in the disputed domain name. In the past, panels have held that the failure to make an active use of an infringing web page is evidence of a lack of rights and legitimate interests. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)”). As Respondent’s domain name currently resolves to a completely inactive web page, the Panel finds that Respondent does not have rights or legitimate interests in the <deeptone.com> domain name under Policy ¶ 4(a)(ii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s registration and prior use of the disputed domain name was to advertise a public offer to sell the domain name. Such open offers have, in the past, been found by panels to indicate that the disputed domain name was registered and used in bad faith. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith). Due to the advertisement of Respondent’s willingness to sell the disputed domain name to anyone making an appealing offer, the Panel finds that the registration and use of the disputed domain name was done in bad faith by Respondent under Policy ¶ 4(b)(i).
Respondent’s registration and prior use of the disputed domain name provided hyperlinks to items on other sites, one of which was for treadmills. Complainant, as a provider of fitness facilities and services, had its business disrupted by Respondent’s use of a domain name identical to promote the same products and services that Complainant provides in direct relation to the DEEP TONE mark. Previous panels have found that this behavior demonstrates that a respondent lacks rights and legitimate interests in a disputed domain name. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites). The Panel finds that Respondent’s use of the disputed domain name to divert Internet users away from Complainant’s website and provide links to offerings of services similar to those Complainant provides constitutes bad faith registration and use and is a violation of Policy ¶ 4(b)(iii).
The registration and prior use of the disputed domain name by Respondent offered hyperlinks for Internet users to direct them to products and services, some of which were in direct competition with those provided by Complainant. Presumably, Respondent received click-through fees for these links. The use of an identical domain name in order to intentionally create confusion as to Complainant’s association with the domain name and to profit from this confusion has been found to constitute bad faith registration and use of a domain name under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). The Panel finds that the commercially gainful use of the identical domain name by Respondent evidences bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant contends that the current inactive holding of the disputed domain name demonstrates that Respondent’s registration and use of the <deeptone.com> domain name is in bad faith. Past panels have found that the failure to use a domain name in any way constitutes bad faith registration and use. See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). The Panel thus finds that Respondent’s registration, use, and eventual inactive holding of the <deeptone.com> domain name was done in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <deeptone.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 22, 2011
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